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1208 Reply Briefs and Examiner's Responses to Reply Brief< [R-3] - 1200 Appeal
1208 Reply Briefs and Examiner's Responses to Reply Brief< [R-3]
**>37 CFR 41.41 Reply brief.
(a)
(1) Appellant may file a reply brief to an examiner's answer within two months from the date of the examiner's answer.
(2) A reply brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other evidence. See § 1.116 of this title for amendments, affidavits or other evidence filed after final action but before or on the same date of filing an appeal and § 41.33 for amendments, affidavits or other evidence filed after the date of filing the appeal.
(b) A reply brief that is not in compliance with paragraph (a) of this section will not be considered. Appellant will be notified if a reply brief is not in compliance with paragraph (a) of this section.
(c) Extensions of time under § 1.136 (a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136 (b) of this title for extensions of time to reply for patent applications and § 1.550 (c) of this title for extensions of time to reply for ex parte reexamination proceedings.
37 CFR 41.43 Examiner's response to reply brief.
(a)
(1) After receipt of a reply brief in compliance with § 41.41, the primary examiner must acknowledge receipt and entry of the reply brief. In addition, the primary examiner may withdraw the final rejection and reopen prosecution or may furnish a supplemental examiner's answer responding to any new issue raised in the reply brief.
(2) A supplemental examiner's answer responding to a reply brief may not include a new ground of rejection.
(b) If a supplemental examiner's answer is furnished by the examiner, appellant may file another reply brief under § 41.41 to any supplemental examiner's answer within two months from the date of the supplemental examiner's answer.
(c) Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.
I. REPLY BRIEF
Under 37 CFR 41.41(a)(1) and 41.43(b), appellant may file a reply brief as a matter of right within 2 months from the mailing date of the examiner's answer or supplemental examiner's answer. Extensions of time to file the reply brief may be granted pursuant to 37 CFR 1.136(b) (for patent applications) or 1.550(c) (for ex parte reexamination proceedings). Extensions of time under 37 CFR 1.136(a) are not permitted. The examiner may provide a supplemental examiner's answer to respond to any reply brief that raises new issues. See MPEP § 1207.05. Normally, appellant is not required to file a reply brief to respond to an examiner's answer or a supplemental examiner's answer, and if appellant does not file a reply brief within the two month period of time, the application will be forwarded to the Board for decision on the appeal. In response to the following, however, appellant is required to file either a reply brief to maintain the appeal or a reply under 37 CFR 1.111 to reopen prosecution:
(A) An examiner's answer that contains a new ground of rejection pursuant to 37 CFR 41.39 (see MPEP § 1207.03); or
(B) A supplemental examiner's answer responding to a remand by the Board for further consideration of a rejection pursuant to 37 CFR 41.50(a) (see MPEP § 1207.05). Such a supplemental examiner's answer may contain a new ground of rejection (also see MPEP § 1207.03).
If appellant requests that the appeal be maintained in response to a new ground of rejection made in an examiner's answer or a supplemental examiner's answer, the appellant must file a reply brief to address each new grounds of rejection set forth in the answer in compliance with 37 CFR 41.37(c)(1)(vii) within two months from the mailing of the answer. The reply brief should include the following items, with each item starting on a separate page, so as to follow the other requirements of a brief as set forth in 37 CFR 41.37(c):
(A) Identification page setting forth the appellant's name(s), the application number, the filing date of the application, the title of the invention, the name of the examiner, the art unit of the examiner and the title of the paper (i.e., Reply Brief);
(B) Status of claims page(s);
(C) Grounds of rejection to be reviewed on appeal page(s); and
(D) Argument page(s).
The reply brief can also be a substitute brief replacing the original brief by responding to both the new ground of rejection and all other grounds of rejection covered in the original brief. In such an instance, the reply brief must meet all the requirements of a brief as set forth in 37 CFR 41.37(c).
Any reply brief must also be in compliance with requirements set forth in 37 CFR 41.41. New or non-admitted affidavits, and/or other evidence are not permitted in a reply brief. Any new amendment must be submitted in papers separate from the reply brief, and the entry of such papers is subject to the provisions of 37 CFR 41.33. A paper that contains an amendment is not a reply brief within the meaning of 37 CFR 41.41. Such a paper will not be entitled to entry simply because it is characterized as a reply brief.
If a reply brief is filed in response to a supplemental examiner's answer under 37 CFR 41.50(a) that was written in response to a remand by the Board for further consideration of a rejection, any reply brief accompanied by an amendment, affidavit or other evidence will be treated as a request that prosecution be reopened before the examiner. If appellant fails to file a reply brief or a reply under 37 CFR 1.111 within two months from the mailing of the examiner's answer that contains a new ground of rejection, or a supplemental examiner's answer under 37 CFR 41.50(a), the examiner will dismiss the appeal as to the claims subject to the new ground of rejection or the rejection for which the Board has remanded the proceeding. See MPEP § 1207.03 and § 1207.05.
II. EXAMINER'S RESPONSE TO A REPLY BRIEF
If a reply brief is not in compliance with 37 CFR 41.41, the examiner must notify appellant that the reply brief has not been considered and the reason for non-compliance. The examiner may use form paragraph 12.182 on Form PTOL-90 to notify the appellant.
¶ 12.182 Reply Brief Not Considered
The reply brief filed on [1] has not been considered because it is not in compliance with 37 CFR 41.41(a). The reply brief [2].
Examiner Note
1. In bracket 1, insert the date on which the reply brief was filed.
2. In bracket 2, insert the reasoning. For example, insert "was not filed within the non-extendable time period set in 37 CFR 41.41(a)(1)" or insert "included a new or non-admitted amendment or new or non-admitted affidavit or other evidence".
3. Use this form paragraph to notify the appellant under 37 CFR 41.41(b) that a reply brief is not being considered because it is not in compliance with 37 CFR 41.41(a).
If a reply brief is filed in compliance with 37 CFR 41.41, the primary examiner must acknowledge receipt and entry of the reply brief. The examiner may use form paragraph 12.181 on Form PTOL-90 to provide the acknowledgment.
¶ 12.181 Acknowledgment of Reply Brief
The reply brief filed [1] has been entered and considered. The application has been forwarded to the Board of Patent Appeals and Interferences for decision on the appeal.
Examiner Note
1. In bracket 1, insert the date on which the reply brief was filed.
2. Use this form paragraph to notify the appellant under 37 CFR 41.43(a)(1) that a reply brief has been received and entered.
3. This form paragraph is to be printed on a blank page for attachment to a PTOL-90 or PTO-90C.
4. Include form paragraph 12.184 after this paragraph to include a supplemental examiner's answer under 37 CFR 41.43(a)(1) responding to any new issue raised in the reply brief.
In addition, the examiner may:
(A) Withdraw the final rejection and reopen prosecution to respond to the reply brief (see MPEP § 1207.04); or
(B) Furnish a supplemental examiner's answer responding to any new issue raised in the reply brief (see MPEP § 1207.05).
Any supplemental examiner's answer responding to a new issue raised in a reply brief must be approved by the Technology Center (TC) Director or designee. 37 CFR 41.43(a)(2) prohibits a supplemental examiner's answer responding to a reply brief from including a new ground of rejection. After the filing of a reply brief, any new ground of rejection responding to a reply brief must be by way of reopening of prosecution. See MPEP § 1207.04. The examiner's decision to withdraw the final rejection and reopen prosecution to enter a new ground of rejection requires approval from the supervisory patent examiner, which approval must be indicated in the Office action setting forth the new ground of rejection. See MPEP § 1207.04.
In response to the supplemental examiner's answer, the appellant may file another reply brief under 37 CFR 41.41 within 2 months from the mailing of the supplemental examiner's answer. The two month time period for reply is not extendable under 37 CFR 1.136(a), but is extendable under 37 CFR 1.136(b) for patent applications and 37 CFR 1.550(c) for ex parte reexamination proceedings. Appellant cannot request that prosecution be reopened pursuant to 37 CFR 41.39(b) or 41.50(a) at that time.
The acknowledgment of receipt and entry of a reply brief under 37 CFR 41.41 is an indication by the examiner that no further response by the examiner is deemed necessary. It should also be noted that an indication that certain rejections have been withdrawn as a result of the reply brief is not, by itself, a supplemental examiner's answer and is permitted. Such an indication of a change in status of claims would not give appellant the right to file another reply brief. The examiner may make the indication on form PTOL-90.<
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